Wednesday, September 23, 2015

Thermometer patent wars

Related to a ruling on MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT, Exergen v. Kaz, 2015 U.S. Dist. LEXIS 117770

As to "intended purpose" vs. substantive claim limitation:

The facts of this case lend themselves to the conclusion that "detecting human body temperature" states the intended purpose of the claims and is not itself a substantive claim limitation. Although Kaz seizes on the fact that Exergen agreed to a construction of the phrase during the Markman proceeding, construing a term is not determinative of a claim limitation. The patents-in-suit do not teach direct measurement of temperature at a person's core. Rather, they disclose methods of measuring temperature at the forehead, and then computing or otherwise providing "a body temperature approximation." See, e.g., '938 patent claim 54. The steps of the claims constitute integral methods that do not depend on the preamble. Each asserted [*6] claim that recites language from the preamble also incorporates an explicit step for computing or determining an internal body temperature or a body temperature approximation. Thus, the preamble language "is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim."4 Am. Med., 618 F.3d at 1359. Finally, the preamble language was not "clearly added to overcome a [prior art] rejection." Id. The preamble phrase appeared in the original claims of the patent applications and Exergen did not rely on the preamble language to distinguish prior art during patent prosecution.

Of expert opinions in summary judgment:

It is unnecessary for the court to determine now the admissibility of Kaz's evidence to decide the motion for summary judgment. At this juncture, the court must draw all reasonable inferences in Exergen's favor as the nonmoving party.8 See Fed. R. Civ. P. 56. In doing so, the court finds that Dr. Collins' evidence, if credited by the jury, could warrant a conclusion that the devices meet the "peak temperature" limitation, either literally or under the doctrine of equivalents.9 See, e.g., In re Gabapentin Patent Litig., 503 F.3d 1254, 1259-1261 (Fed. Cir. 2007) (conflicting expert opinions sufficient to defeat summary judgment). That said, the court will deny Exergen's motion to strike. [*15] The court will give the parties (if either so chooses) the opportunity to take the depositions of Cho and Frick for the limited purpose of authenticating the Microlife documents on which Gorsich relies. The court will decide the admissibility question by way of an appropriate motion in limine prior to trial.

There was an earlier order relating to an assertion of invalidity; from the National Law Review on the motion by Kaz:

In its motion, Kaz contended that the ’813 patent, which relates to measuring body temperature at the ear, teaches the key elements of the asserted claims and that Exergen was estopped from arguing otherwise based upon positions it took in an earlier litigation involving the ’813 patent. In that earlier case, Exergen alleged that certain temporal artery thermometers similar to Kaz’s infringed claim 7 of the ’813 patent, which is directed to a thermometer for measuring temperature at any “biological surface tissue.” Exergen also claimed that claim 7 of the ’813 patent was enabled by the ’813 specification. As a result, Kaz asserted that Exergen cannot reverse course now and claim that the ’813 patent does not disclose essential elements of the patents asserted against Kaz.

In response, Exergen stated that its position in the earlier case—“that claim 7 of the ’813 patent is both enabled and covers temporal artery thermometers”—and its position here—“that temporal artery thermometers were invented years after the ’813 patent”—are not directly inconsistent and thus, estoppel is not triggered.

The Court sided with Exergen, explaining that after-arising technology—like temporal artery thermometers—can be captured within the scope of the broadly-drafted ’813 patent claims without necessitating the conclusion that “the ’813 patent disclosed the later invention.” Similarly, Judge Stearns found that the earlier jury’s finding of enablement of claim 7 of the ’813 patent “does not conclusively establish that the ’813 patent enabled the making of temporal artery thermometers.

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About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.